No question that an IP strategy should be aligned with your
business strategy. But what are the steps involved in developing an
IP strategy and how do you put it all together?
Kate Wilson, Partner, James & Wells Intellectual
Property, was asked to write this article as one of a series of
Briefing Notes recently published1 by the International
IP2 Strategists Association (INTIPSA) on World IP day.
Below is an extract of Kate's published INTIPSA article. Kate
Wilson was named one of Intellectual Asset Management
Magazine's 2011 global Top 250 most influential IP strategists
- the first year a New Zealander has been listed . To read
Kate's full article you can view or download the PDF document
here under INTIPSA Tips.
No question that an IP strategy should be aligned with business
But, what needs to be better recognised is that IP issues can
actually drive most strategic considerations in an organisation.
For example, many pharmaceutical & chemical companies (Dow for
example) focus their research on compounds for which they have
freedom to operate3 and can gain the most
When you consider that 80% of the value of a business is in its
intangible assets, then it makes sense that the framework of an
organisation is based around those assets and associated IP issues
- rather than trying to dovetail an IP strategy into a less than
effective business plan.
However in the real world most businesses have grown organically
rather than through ruthless planning, so this article also takes
into account the existing DNA of a business when developing an IP
strategy through a step wise approach.
Thus, the first step is to analyse the organisation itself,
along with the environment in which it operates. One way to do this
is to have regard to the following categories.
1 At some point a patent application
is published, meaning its contents are available for anyone to
read. In New Zealand publication occurs when a patent application
is accepted. However, in most countries publication occurs
18 months after the application is filed. 2 Refers to the ownership of an intangible thing - the
innovative idea behind a new technology, product, process, design
or plant variety, and other intangibles such as trade secrets,
goodwill and reputation, and trade marks. Although intangible, the
law recognises intellectual property as a form of property which
can be sold, licensed, damaged or trespassed upon.
Intellectual property encompasses patents, designs, trade
marks and copyright. 3 Typically used in respect of a search performed on
granted patents or pending patent applications to
determine if a product or process infringes any of the
claims. If the search determines that there are no
relevant granted patents then someone may be said to have freedom
to operate (ie to operate a business making and selling the product
or using the process). Pending patent applications may affect
freedom to operate in the future if granted. Note that the search
may be expanded to include registered designs. 4 A proprietary right in an invention which
provides the owner with an exclusive right for up to 20 years to
make, sell, use or import the invention. In exchange for this
monopoly the patent is published so that
others can see how the invention works and build on that knowledge.
The patented invention may also be used by the public once the
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
James and Wells is the 2010 New Zealand Law Awards winner of
the Intellectual Property Law Award for excellence in client
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By its judgment dated March 15, 2013, the Madras High Court ("the Court") held
that the amendment made in the year 2005 ("2005 Amendment") to section 126 of the
Patents Act, 1970 ("the Act") pertaining to the qualifications for registration as patent agents is unconstitutional.
The practice of parallel importing is a hot topic in Australia at the moment.
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